USPTO Patents Application 10773025

Application No: 10/773,025

Docket No. : ANN-F28 11

REMARKS
I. Overview

Claims 9-14 are pending in the present application. Claim 4 was previously canceled,
claims 1-3 and 5-8 are canceled herein. New claims 9-14 are added herein. No new matter has
been added. Applicant respectfully requests reconsideration of the claims in view of the
following remarks.

The issues raised by the Examiner in the current Office Action dated February 20, 2008
(Office Action) are as follows:

• The Application is alleged to not comply with the conditions for receiving the
benefit of an earlier filing date under 35 U.S.C. § 120;

• The Drawings are objected to under 37 C.F.R. § 1.83(a) as not showing every
feature of the claims;

• Claims 1-3 and 5 stand rejected under 35 U.S.C. § 103(a) as assertedly being
unpatentable over U.S. Patent No. 5,613,137 to Bertram, et al. (hereinafter
"Bertram") in view of U.S. Patent No. 5,164,697 to Kramer (hereinafter
"Kramer") and further in view of U.S. Patent No. 3,942,148 to Nishioka
(hereinafter "Nishioka");

• Claim 6 stand rejected under 35 U.S.C. § 103(a) as assertedly being unpatentable
over Bertram in view of Kramer and Nishioka and further in view of U.S. Patent
No. 3,198,922 to Rohacs (hereinafter "Rohacs"); and

• Claims 7-8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
U.S. Patent No. 5,203,563 to Loper, III (hereinafter "Loper") in view of Kramer
and further in view of Nishioka.

Applicant respectfully traverses the outstanding claim rejections and requests reconsideration
and withdrawal in light of the amendments and remarks presented herein.

II. Priority Objection

The priority claim in the present application to prior Application No. 08/677,378 (issued
as U.S. Patent No. 6,222, 525)(hereinafter "the '378 application") is disputed in view of the
motor and offset weight elements of claim 8, which has been canceled herein. Applicant
respectfully submits that the Examiner's objection to Application's priority claim is moot
because the pending claims no longer include the motor and offset weight element.

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Applicant further notes that this priority issue has been previously addressed in during
the prosecution of related patent applications, such as Application No. 09/721,090 (issued as
U.S. Patent No. 6,310,606) and Application No. 09/715,532 (issued as U.S. Patent No.
6,906,700). See, e.g., Amendment dated June 14, 2004 and Non-final Action mailed May 4,
2004 in the file history of Application No. 09/715,532. Both of these applications also claimed
priority back to the '378 application. Furthermore, the Examiners assigned to those applications
found that the motor and offset weight were present in the '378 application and that the
applications were entitled to priority to the '378 application.

III. Objection to the Drawings

The Examiner has objected to the drawings as not showing four variable resistor
potentiometers as recited in canceled claims 2 and 5. Applicant respectfully submits that the
objection to the Drawings is moot because claims 2 and 5 are no longer pending in the
application.

IV. Claim Rejection - 35 U.S.C. § 103

The now-canceled claims were rejected under 35 U.S.C. § 103(a) as being unpatentable
over various combinations of the Bertram, Kramer, Nishioka, Rohacs and Loper references.
Applicant respectfully submits that these references do not teach the elements of the claims that
are added herein.

The Bertram patent teaches a computer system having a input device comprising two
joysticks and a touch pad. Bertram teaches that the touchpad is a pressure sensor that detects
the location of a touch. Col. 13, Ins. 19-22. Bertram teaches that the ends of the joysticks have
pushbutton switches 130a/b. Col. 14, Ins. 35-37. Bertram also teaches that the joysticks activate
pushbutton switches 150a/b mounted on a switch base. Col. 14, Ins. 63-66. Bertram's input
device 18 is connected to data processing unit 12 by a serial data link 22. Among other
deficiencies, Bertram does not teach an input device using proportional sensors or a transmitter
for wireless communication of signals from the input device.

The Kramer patent discloses a keyboard having pushbuttons 22 mounted on a printed
circuit board 10. Col. 3, Ins. 58-64. The pushbuttons provide variable resistance depending
upon the amount of pressure applied to the button. Col. 4, In. 63-col. 5, In. 8. Among other

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Application No: 10/773,025

Docket No. : ANN-F28 11

deficiencies, Kramer does not teach that the pushbuttons indicate movement of a secondary input
member. Kramer also fails to teach a transmitter for wireless communication of signals from the
pushbuttons.

The Nishioka patent discloses a device for simultaneously controlling a plurality of
variable resistors in response to a single input member. Col. 1, Ins. 5-9. Among other
deficiencies, Nishioka fails to disclose sensors that indicate movement of a secondary input
member. Additionally, Nishioka does not teach a transmitter for wireless communication of
signals from the variable resistors.

The Rohacs patent discloses multiple pushbuttons mounted on aircraft control handles.
Fig. 1 . Among other deficiencies, Rohacs does not teach that the pushbuttons are proportional
sensors or that they are mounted on a circuit board. Rohacs also fails to teach a transmitter for
wireless communication of signals from the pushbuttons.

The Loper patent discloses a shaker control device for a video game. Col. 4, Ins. 59-68.
Among other deficiencies, Loper does not teach proportional sensors. Loper also fails to teach a
transmitter for wireless communication of signals.

In view of the shortcomings of the cited references, Applicant respectfully submits that
the proposed combinations of the Bertram, Kramer, Nishioka, Rohacs and Loper references do
not teach or suggest the elements of pending independent claims 9 and 1 2. Accordingly,
Applicant requests that the Examiner allow pending claims 9 and 12.

U.S. Patent No. 4,839,838 to LaBiche, etal. (hereinafter "LaBiche") was cited in related,
pending patent Application No. 1 1/240,329. LaBiche discloses a three-dimensional input
apparatus. Col. 3, Ins. 40-54. LaBiche discloses that the apparatus can communicate using
wireless methods. Id. LaBiche discloses the use of pushbutton switches for selecting motion in
a single plane or direction. Col. 4, Ins. 23-27. However, among other deficiencies, LaBiche
does not teach or suggest sensors located specifically on upper and lower surfaces of a circuit
board. More specifically, LaBiche does not teach the use of a circuit board at all. LaBiche also
fails to teach or suggest the use of a secondary input member capable of being controlled by the
human hand bidirectionally on at least one axis . LaBiche is further missing a disclosure that
teaches a volume function or an ON/OFF function. Accordingly, the LaBice reference whether

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Docket No. : ANN-F28 11

taken alone or in combination with the Bertram, Kramer, Nishioka, Rohacs and Loper references
does not teach or suggest the elements of pending independent claims 9 and 12.

Claims 10, 11, 13 and 14 depend from independent claims 9 and 12, respectively, and
add further limitations. For example, claims 10 and 13 recite "said at least one proportional
sensor is of a capacitive type." The cited references do not teach capacitive-type proportional
sensors. It is respectfully submitted that these dependent claims are allowable by reason of
depending from an allowable claim as well as for adding new limitations.

Applicant has made a diligent effort to place the claims in condition for allowance.
However, should there remain unresolved issues that require adverse action, it is respectfully
requested that the Examiner telephone Applicant's attorney at 972-732-1001 so that such issues
may be resolved as expeditiously as possible.

SLATER & MATSIL, L.L.P.
17950 Preston Rd., Suite 1000
Dallas, Texas 75252
Tel.: 972-732-1001
Fax: 972-732-9218

Respectfully submitted,

July 21. 2008

/Michael J. Fogarty, III/
Michael J. Fogarty, III
Attorney for Applicants
Reg. No. 42,541

Date

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